Ex Parte Patterson et al

Patent Trial and Appeal Board

Feb 14, 2017

13589676 (P.T.A.B. Feb. 14, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/589,676 08/20/2012 Timothy Patrick Patterson 66558-000011/US 3608
27572 7590 02/16/2017
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
NGUYEN, CUONG QUANG
ART UNIT PAPER NUMBER
2811
NOTIFICATION DATE DELIVERY MODE
02/16/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
troymailroom @hdp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY PATRICK PATTERSON, TIM J. MORAN, and
CRAIG W. FORREST
Appeal 2016-001950
Application 13/589,676
Technology Center 2800
Before TERRY J. OWENS, KAREN M. HASTINGS, and
MICHAEL G. MCMANUS, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’
final decision rejecting claims 1—21. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
1IMI USA, INC. is stated to be the real party in interest (App. Br. 1).
Appeal 2016-001950
Application 13/589,676
Claim 1 is illustrative of the appealed subject matter (emphasis added
to identify disputed limitation):
1. An image sensor comprising:
an imager die;
a circuit board flip-chip bonded to the imager die;
a stiffener; and
an optical layer disposed on the stiffener and having a first
portion configured to refract light differently than a second
portion, wherein both the first portion and the second portion are
integrally formed with the optical layer and said first portion is
a lens.
Independent claims 10 and 15 are also drawn to a similar image
sensor as in claim 1, with limitations corresponding to the disputed
limitations of “a lens,” as well as “an optical layer disposed on the stiffener”
as recited in claim 1, or “adhered to” the stiffener in claim 10.
The Examiner rejected claims 1—5, 10-12, and 21 under 35 U.S.C.
§ 102(b) as being anticipated by Minamio et al. (US 2005/0169620 Al,
published Aug. 4, 2005).
The Examiner rejected claims 1—4, 6, 10-15 and 18 under 35 U.S.C.
§ 102(b) as being anticipated by Tan et al. (US 7,294,827 B2; issued Nov.
13,2007).
The Examiner also maintains the grounds of rejection of claims 6 and
19 under 35 U.S.C. § 103 as listed on pages 6—9 of the Final Action.
The only disputes in this case are (1) whether Minamio identically
discloses “a lens” as required in each of the claims, and (2) whether Tan
discloses that its lens 114 is “disposed on” or “adhered to” a stiffening
element as required by the claims.
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Application 13/589,676
ANALYSIS
The §§ 102 and 103 Rejections based on Minamio
Appellants argue that the Examiner has not shown how Minamio
identically discloses “an optical layer” having a first portion that “is a lens”
as required by the disputed claims (App. Br. ; Reply Br. 2, 3). A
preponderance of the evidence supports Appellants’ position.
Appellants urge that one of ordinary skill in the art would not consider
any portion of Minamio’s hologram 17 “a lens” as required by the claims
(App. Br. 4—6). Appellants state that one of ordinary skill in the art would
understand that a lens must have at least one curved surface which focuses
rays of light, and provide evidence in support thereof (e.g., App. Br. 5,
discussing a dictionary definition of the term “lens”).
The Examiner has not adequately explained how one of ordinary skill
would have considered Minamio’s hologram 17 “a lens” (Ans. 4). The
Examiner’s mere conclusion that the transition of the thinner portion of 17 to
its thicker portion is a curve (Ans. 4) is insufficient to establish that any
portion of hologram 17 is a lens. To the contrary, as Appellants point out,
the transition as depicted in the fig. 5 of Minamio is formed by straight lines
(Reply Br. 2, 3).
Thus, on this record, Minamio’s hologram 17 falls short of being “a
lens” as required by the claims. Therefore, we agree with Appellants that
the Examiner has taken an unreasonably broad interpretation of the
aforementioned claim limitation when considered in light of the
Specification for the reasons explained in the Briefs. As such, we cannot
sustain the anticipation rejection based on Minamio. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (during examination proceedings,
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Appeal 2016-001950
Application 13/589,676
claims are given their broadest reasonable interpretation consistent with the
specification); see also In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004) (the scope of the claims in patent applications is not
determined solely on the basis of the claim language, but upon giving claims
their broadest reasonable construction in light of the specification as it would
be interpreted by one of ordinary skill in the art).
Accordingly, the Examiner’s 35 U.S.C. § 102 rejection of claims
based on Minamio is reversed. The Examiner fails to rely upon any
evidence that the other applied prior art teaches or suggests the use of “a
lens” as claimed. Thus, the Examiner’s 35 U.S.C. § 103 rejections of the
remaining claims based on Minamio are also reversed.
The §§ 102 and 103 Rejections based on Tan
On the other hand, the only dispute with respect to the anticipation
rejection based on Tan is whether the lens 114 of Tan is “disposed on”
(claims 1 and 15) or “adhered to” (claim 10) the stiffener component 118
and/or 138 identified by the Examiner.
Appellants’ position is that since the lens 114 “is secured in lens
assembly 112, which in turn is installed in housing 116, which in turn is
bonded to glass substrate 118” (App. Br. 8), then the lens is not disposed on
or adhered to glass substrate 118 {id.; Reply Br. 3, 4). The Examiner’s
position is that there is no requirement in the claims that the lens be in direct
contact with the stiffening element (Ans. 4). Appellants have not explained
why or how the terms “disposed on” and “adhered to” require direct contact
between the two elements as recited in the claims.
Thus, a preponderance of the evidence supports the Examiner’s
finding of anticipation based on Tan. Appellants have not directed our
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Application 13/589,676
attention to any definitions of the disputed phrase(s) in the Specification, or
to any persuasive reasoning or credible evidence to establish that the
Examiner’s interpretation of the “disposed on” language of independent
claims 1 and 15, as well as the “adhered to” language of claim 10, is
unreasonable. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (if the Specification does not provide a definition for claim terms,
it is not unfair to apply a broad yet reasonable interpretation, since applicants
may amend claims to narrow their scope).
Appellants do not present any arguments to the remaining § 103
rejections based on Tan. Accordingly, we affirm the §§102 and 103
rejections of all the claims based on Tan.
DECISION
The Examiner’s §§ 102 and 103 rejections of claims 1—21 based on
Minamio are reversed.
The Examiner’s §§ 102 and 103 rejections of claims 1—21 based on
Tan are affirmed.
The Examiner’s decision is affirmed.
ORDER
AFFIRMED
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